Changes To The Profession: Patent And Trademark Agent Privilege And A New Governance Framework

On June 24, 2016, by way of statutory amendment, the age-old common law concept of privilege between lawyers and their clients was extended to certain communications between patent and trademark agents (collectively "agents") and their clients. First introduced in Bill C-59 in April 2015, these amendments to the Canadian Patent Act and Trade-marks Act ensure that communications made with the expectation of confidentiality and for the purpose of seeking or giving advice between agents and their clients are protected from forced disclosure within or outside a legal proceeding. Such privilege, which belongs to the client, may only be waived, impliedly or expressly, by the client.¹

This amendment marks a significant change in the law. Courts previously held that privilege did not extend to agents, as they are not members of the legal profession.² In fact, a foreign agent's communications have previously been ordered to be disclosed in Canada notwithstanding that